News & Analysis as of

Apple Patent Infringement Patent Trial and Appeal Board

Jones Day

PTAB Denies Institution of IPRs in Apple v. Haptic

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In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more

Jones Day

PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

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Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more

WilmerHale

Federal Circuit Patent Watch: FDA Filing Can Create Personal Jurisdiction; “Compelling” Arguments that Reverse Doctrine of...

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Precedential and Key Federal Circuit Opinions - STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION [OPINION] (2023-1790, 1/24/2025) (Moore, Hughes, Cunningham) - Moore, Chief J. The Court reversed the district...more

Alston & Bird

Patent Case Summaries | Week Ending August 30, 2024

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Wisconsin Alumni Research Foundation v. Apple Inc., Nos. 2022-1884, -1886 (Fed. Cir. (W.D. Wis.) Aug. 28, 2024). Opinion by Prost, joined by Taranto and Chen. Wisconsin Alumni Research Foundation (WARF) sued Apple for...more

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

Jones Day

Road Mapping Leads to Dead End

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On April 25, 2024, the PTAB denied Masimo Corporation’s (“Petitioner’s”) second petition for inter partes review (“IPR”) against U.S. Patent No. 10,076,257 (the “’257 patent”). Masimo Corp. v. Apple Inc., IPR2024-00071,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

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In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

Jones Day

Error In Declaration Insufficient To Sink IPR

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In a precedential opinion, the Court of Appeals for the Federal Circuit vacated a final written decision in which the Patent Trial and Appeal Board (“PTAB”) found that Apple had failed to meet its burden of showing...more

Jones Day

Director Demonstrates Ability to Review Non-Dispositive PTAB Determinations

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On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest (“RPIs”) in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413. Director Vidal held that the...more

Knobbe Martens

Federal Circuit Review - April 2023

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Who Bears the Burden of Proof for IPR Estoppel? In Ironburg Inventions Ltd. v. Valve Corp., Appeal No. 21-2296, the Federal Circuit held that the patentee has the burden of proving that invalidity grounds not raised in a...more

Hudnell Law Group

Federal Circuit Revives Big Tech’s Fintiv Challenge

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On March 13, 2023, in Apple, Inc., et al. v. Vidal, Case No. 2022-1249 (Fed. Cir. March 13, 2023), the Federal Circuit reversed and remanded a decision from the Northern District of California dismissing a lawsuit filed by...more

Knobbe Martens

Judicial Review Is Available for PTO Director’s Fintiv Rulemaking Procedure

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APPLE INC. v. VIDAL - Before Lourie, Taranto, and Stoll. Appeal from the United States District Court for the Northern District of California. Summary: Judicial review is available to determine whether the PTO...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Knobbe Martens

Effects of Proximity, Plurals, and Passive Voice for Claim Construction

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APPLE INC. v. MPH TECHNOLOGIES OY - Before Moore, Prost, and Taranto. Appeal from Patent Trial and Appeal Board. Summary: The proximity of concepts in a claim may link the concepts together and affect the plain meaning...more

Jones Day

Don’t Save The Best: Federal Circuit Confirms Broad IPR Estoppel

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The patent fight between Caltech and Broadcom/Apple made waves this month when the Federal Circuit vacated the $1.1 billion infringement award that Caltech had won in district court....more

Goldberg Segalla

Federal Circuit Clarifies IPR Estoppel and Vacates $1.1 Billion Verdict in Favor of Caltech Due to Improper Damages Theory

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On February 4, 2022, the Federal Circuit clarified that IPR estoppel extends to all claims and invalidity grounds that the petitioner could have reasonably asserted in its IPR petition. ...more

Jones Day

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

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Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

Knobbe Martens

Federal Circuit Overrules Shaw And Broadens IPR Estoppel In District Court Proceedings

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California Institute of Technology v. Broadcom Inc. and Apple Inc. Before Lourie, Linn, and Dyk (concurring/dissenting).  Appeal from the District Court for the Central District of California - Summary: IPR estoppel in...more

Kramer Levin Naftalis & Frankel LLP

Northern District of California Dismisses Challenge to PTAB’s Fintiv Factors

On Nov. 10, 2021, the Northern District of California granted the United States Patent and Trademark Office’s (USPTO) motion to dismiss a lawsuit brought by Apple and co-plaintiffs challenging the Patent Trial and Appeal...more

McDermott Will & Emery

No More Bites at the Apple: Imminent and Non-Speculative Standing Still Required

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The US Court of Appeals for the Federal Circuit reiterated that a patent challenger did not have Article III appellate standing to obtain review of a final Patent Trial & Appeal Board (PTAB) ruling because the underlying...more

Knobbe Martens

No Standing for Second Bite at the Apple

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APPLE, INC. v. QUALCOMM, INC. Before Newman, Prost, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents that Apple licenses from...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - July 2021

This issue of The PTAB Review begins with a brief summary of the U.S. Supreme Court’s most recent pronouncement about America Invents Act (AIA) reviews. It then provides an update on the Patent Trial and Appeal Board’s...more

Foley & Lardner LLP

. License Agreement Not Enough for Standing on Appeal of an IPR Apple Inc. v. Qualcomm Inc.

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In a precedential decision, the Federal Circuit held that Apple lacked standing to appeal from its loss as petitioner in a couple of inter partes reviews (IPRs) against patent owner Qualcomm. Background - Qualcomm sued...more

Haug Partners LLP

Federal Circuit Finds Insufficient Evidence to Establish Standing to Appeal IPR Decisions in Apple Inc. v. Qualcomm Inc.

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On April 7 2021, the Federal Circuit in Apple Inc. v. Qualcomm Inc., No. 20-1561, — F.3d —-, 2021 WL 1287437, *1, *5 (Fed. Cir. Apr. 7, 2021), held that Apple failed to establish standing to appeal inter partes review (IPR)...more

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